Intellectual Property C

Intellectual Property –
Points of View
 Moving Ahead: The Knowledge Industry
in the 21st Century
Imprint
BITKOM – German Association for Information, Editors
Technology, Telecommunications and New Media e.V., Judith Lammers
Berlin, reserves all rights, including the right to copy Daniel Holznagel
extracts.
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interviews and articles are those of the independent
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the other experts. We will be pleased if they stimulate
you to take up the subject from different points of
view.
Berlin, March 2007
Intellectual Property –
Points of View
Moving Ahead:
The Knowledge Industry
in the 21st Century
Contents
Page 5 Introduction
Page 6 1 | Intellectual property needs protection and public acceptance
Page 7 2 | Intellectual property is our most important stock for the future
Page 10 3 | Authors must be appropriately compensated
Page 12 4 | System change: As far as possible, private copying levies must be replaced
by individual payments using DRM
Page 14 5 | Levies are only justified in the analogue context
Page 16 6 | Inventions need patents, otherwise there would often be no return
on the cost of innovation
Page 18 7 | We must continue to develop the European patent system
Page 20 8 | We must find more effective measures to limit product piracy
Page 22 9 | The balanced responsibility regulations in the E-Commerce Directive
must not be overextended, much less disregarded in practice
Page 24 10 | The right to information in Internet cases must pay equal consideration
to the interests of rightholders and providers
Page 26 Glossary
Introduction
In the 21st century, capital resides in our heads. In to crucial topics such as contemporary patent poli-
a high wage country like Germany especially, compa- cy, digital rights management (DRM), and provider
nies must be creative and innovative to survive inter- liability. Opinion leaders from the worlds of business
national competition. Creativity, whether technical or and politics discuss the big issues from their respec-
artistic, can only really flourish if the law adequately tive points of view. We believe this publication is a
protects the fruit of the inventor’s (or the artist’s) valuable contribution to moving the debate toward
labours. The German government is therefore right to addressing real protection for intellectual property in
put protection for intellectual property very high on the 21st century information society.
the agenda during its presidency of the Council of the
European Union (EU) and of the G8.
However, in a legal framework for the future,
the complex system of remunerating inventors and
authors must be streamlined for the digital age. The
sale of creative services on the Internet is gaining
momentum. Their revenue comes not from flat copy-
ing levies fees but from individually tailored licensing
models. What customers pay for works depends on
the extent they actually use them.
This publication summarizes the chief issues in
the ongoing debate on protecting intellectual proper- Willi Berchtold
ty, ranging from rewards for inventors and authors President of BITKOM
Proposition 1
Intellectual property needs protection
and public acceptance
It is the commercial benefit to which the author or inventor alone is entitled; the knowledge
remains free. Freedom of knowledge and intellectual property need not be incompatible – a fact
that is often overlooked.
Alongside the efforts made to provide protection, there is an urgent need to educate the public
about the value of intellectual property. People will not accept the idea of intellectual property
unless they are aware of why it is needed.
Brigitte Zypries
German Federal Minister of Justice
Never before has Intellectual property been talked
about so much. Even if it is still occasionally que-
stioned in some circles, the fact is that intellectual
property is now widely recognized. This is just as well,
because in our digital world and our global economy
the dangers of piracy and ideas theft are much grea-
ter than in days gone by.
Aside from an awareness of the value of intellec-
tual property, we also need effective legal safeguards,
of course. That is the task of the legislators. They
have to come up with a fair balance between the
often competing interests of authors and inventors,
exploiter, industry, and users. That is no easy task,
Bright ideas and innovations therefrom are our but we shall manage it because we work closely, and
capital resource in Germany and the key to safegu- are in constant dialogue, with all of the stakeholders.
arding jobs here. It is therefore right for the federal The legislature must now make decisions about two
government to push for effective protection for important results of our work: We wish to get copy-
intellectual property, both in Germany and on the right into shape for the digital age with amendments
international stage. Germany’s present simultane- to the German Copyright Act, the so called second
ous presidency of both the EU and G8 is an excellent basket. And we intend to introduce additional legisla-
opportunity for doing so. tion to make it easier to enforce intellectual property
rights. We will make it easier to fight infringements
It is essential that the value of intellectual pro- such as illegal copying and piracy.
perty is widely appreciated in society for protection
to work effectively. Otherwise people will not un- Creativity and inventorship drive the innova-
derstand the threat that infringement represents to tive power of our economy. This driving force must
artists, innovators, companies, consumers, and the continue to run at high speed in the future – the
economy. Politicians and business people have joined legislation and economy will achieve this only in close
forces and must continue to work together on this. cooperation!
Proposition 2
Intellectual property is our most important
stock for the future
The protection of intellectual property is particularly relevant for Europe. The digital age is just
beginning: Now is the time to set it on the right course.
Industrial countries such as Germany can no longer rely on the use of material resources, such as
raw materials, for their economic success. To a much greater extent, intangible assets – and creat
ing the conditions for innovation – is the key to success: The brain is the capital of the 21st century.
Innovation may require much higher investment. And investment must create a return, or it
will not be made. However, here lies the distinctiveness of intellectual property. Without special
protection it cannot be exploited, but it also has the function of placing a value on mental
exertion.
Dr. Bernhard Rohleder
Director General of BITKOM
Is intellectual property a new phenomenon?
What special challenge do you see for the
digital age?
People were complaining about plagiarism
2000 years ago, so they must have had some
concept of intellectual property even then. But
in those days there was no very effective way to
protect it. In later ages, trade involving immate-
rial goods grew, and with it the need for protec-
tion. In today’s digital world, in theory anyone
can make perfect copies of works and distribute
them to countless people simultaneously on the
Internet. This is a new challenge for many busi-
ness models. A recent EU survey predicts that in Europe this
business will be generating revenues of €8.3 billi-
Do you have a real-life example? on by 20101. Music downloads alone earned US$1.1
In the summer of 2005, a German company billion in 2005. Also, new online business models
launched a new computer game, the fruit of seve- help companies address customer needs much
ral years’ work by a team of 45 developers, costing more precisely and conveniently.
some €5 million. Just two days later you could
get it on file swap sites. Within a month or two
the company had sold 100,000 copies, but there
were already 600,000 unauthorized copies in use.
1 See European Commission press release IP/07/95, Brussels,
On the other hand, new technologies offer huge January 25, 2007: “Over 400 % growth for creative content on-
opportunities to market content online. line, predicts Commission study – an opportunity for Europe”.
If the law offered no protection, would art and inno-
Knowledge,
vation survive? Put another way: How important is creativity,
intellectual property for our society? innovation
It depends. Without adequate legal protection Work
there just wouldn’t be any technical innovation, or at
least not on anything like the scale we need in high-
wage economies like our own. New technologies and
Raw materials
software require enormous investment in research.
Companies wouldn’t pay for it if they weren’t assured
of the protection they need in order to successfully
market the fruits of that research.
I can’t say whether that also applies to art. Great Agrarian economy Industrial economy Knowledge economy
artists would doubtless still create great works even
if there were no copyright law to protect them. But
innovation that springs primarily from artistic creati-
vity is every bit as entitled to protection as innovation It is sometimes said that intellectual property is fo-
that springs chiefly from the profit motive. cusing more and more on safeguarding investment
We should provide strong safeguards for inno- and less on art and culture.
vative work and leave it to the innovator to decide That is the opposite of my impression. The current
whether to use it or to release work for free copying. discussions about the second basket of amendments
Intellectual property is very important for our to the German Copyright Act are all about the rights
society. And it is only right and proper that innova- of originators of works in the artistic sense. None-
tors, be they inventors, authors, or artists, should be theless, to encourage innovation it is necessary to
entitled to benefit from their efforts. safeguard companies’ investment in research and de-
velopment. Business innovation and art are from the
How important is intellectual property in the infor- same stable: They both draw on creativity. They must
mation technology and communications industry? both be rewarded, they must both be encouraged.
Innovation and creative ideas are the very life- In fact the law affords different protection to diffe-
blood of our industry. These intangibles are a crucial rent categories of work. Thus, rights in a poem are
factor of success. The capital that makes the diffe- different from rights in a new kind of solar cell, and
rence is the capital that resides in our heads. For the different rules again apply to a computer program.
owner of such capital to be able make money from it, But the technological aspect may seem to predo-
the law must protect such capital properly. The ITC in- minate because technology is advancing so rapidly
dustry files one third of all patents applied for in the and therefore commands a great deal of attention.
European Union. Patents are especially important for Think for example of the controversy concerning
us, precisely because they protect so many technical patentability of computer programs and the whole
innovations made by our industry. discussion surrounding digital rights management.
Copyright is also of key importance. The ITC
industry lives in symbiosis with writers and artists. How can the politicians best help in the 21st century?
Without their content there would not be so many Intellectual property has plenty of legal protec-
technologies to utilize it, and vice versa. Interestingly, tion in most western industrialized nations. It is on
in the EU the copyright utilization industry generates the international stage that most work is needed:
well over €1 billion revenues2. Infringements do not stop at border posts. There are
countries that have considerable ground to make
up. The politicians can help by negotiating treaties
and working toward international cooperation. For
instance, the new collaboration between the EU
2 Turku School of Economics and Business Administration, The
Contribution of Copyright and Related Rights to the European
and China on intellectual property rights is a good
Economy, Final Report, 20 October 2003, Executive Summary p.1. start. Better protection against international piracy
The purpose of investments: intangibles
Investments in intangible* and tangible** assets in the USA, as a percentage of GDP
14
12
Tangibles
10
Intangibles
4
2
14 14 14 14 14 2004
* Estimated; ** Private non-residential fixed investment Source: L. Nakamura, Federal Reserve Bank of Philadelphia 2005
was also on the agenda of the G8 summits at Gle- my become more developed, its own potential for
neagles and St. Petersburg. It was correct to focus innovation grows – and with that also grows its need
on concerted action, especially within the ambit of for legally enforceable protection for its intellectual
international organizations such as the World Trade property. Ultimately, by developing a legal framework
Organization (WTO), the Organisation for Economic for protecting intellectual property, we are defining
Co-operation and Development (OECD), the World ground rules not only for the digital economy, but
Intellectual Property Organization (WIPO), Interpol, for the digital world in its broadest sense – and that
and the World Customs Organization (WCO). world knows no national boundaries. Everyone who
One fact works in our favour on the internati- carries political responsibility should be aware of
onal level, by the way: As a country and its econo- that.
Proposition 3
Authors must be appropriately compensated
Intellectual property also provides a legal framework for business commodities such as
“knowledge” and “creativity”, although they are not physical goods. Future copyright must
balance the interests of the author, the user and the general public.
The author should be adequately paid for the licensing as well as for the work-related use.
Prof. Joerg Menno Harms
BITKOM Vice President,
Chairperson of the Supervisory Board of
Hewlett-Packard GmbH
Germany has one of the world’s most vibrant cultural scenes – from
literature to theater to modern art. As a center for culture, Germany, the land
of ideas, displays impressive vitality, imagination, and creativity. This is what
we have to encourage, because, more than ever before, it gives us competitive edge. In technology and in art,
innovations – good ideas – are valuable, and generate revenue. That is why intellectual property needs protec-
tion – especially in our digital age, in which information flies around the globe in seconds. One side of this is
that the innovator must be suitably rewarded. To ensure this happens we need forward-looking, copyright law
which takes particular account of the possibilities of the Internet. It must be safe and convenient for authors
and publishers to seize the opportunities the digital age offers. That means, among other things, that the
analog world’s bureaucratic regulations should not be applied to the new media.
Prof. Dr. Thomas Hoeren
Institute for the Law of Information, Telecommunication,
and Media (ITM),
Westfälische Wilhelms-University, Münster, Germany
The question of royalties is complex, and anyone advocating simplistic
answers is on the wrong track. The approach must depend on the technological
development, and there will always be discussion about whether and how to
compensate authors, so it cannot be rigidly fixed by the law. DRM and performance rights organizations or
collecting societies are not mutually exclusive: Indeed they are complementary. The multimedia world needs a
multilegal licensing strategy: collective rights awareness, private copying levies, DRM, and personal licenses.
We need quiet, a cautious, unhurried approach, without disturbance from quick-firing lobbyists, to allow us
to feel our way towards equity in information and a fair and constitutional balance between the rights of the
authors, the proprietor, and the user.
10
Analysis of literary works
Example – Harry Potter
Merchandising
Books, (Calendars, magic wands
translations ... costumes ...)
Marketing,
lotteries, e-cards ...
Film, TV series,
DVDs, videos,
film scores ...
Audio books, radio
drama ...
Private copies
(licensee levies, levies for
equipment and recording
media)
Card games, computer games,
chess games ...
Theatre performances
11
Proposition 4
System change: As far as possible,
private copying levies must be replaced
by individual payments using DRM
In Germany, copyright law allows private copying as an exception to the comprehensive
rights of the author to the work. The author receives compensation through private copying
levies that are collected from the manufacturers of copying equipment and recording
media.
The system of private copying levies is a relic from an analogue world that can no longer
provide the necessary balance between all parties. DRM and individual licensing offer a
more suitable alternative for the future. This change in the system is anticipated and supported
in European law.
Individual licensing is good for rights: It raises awareness. With private copying levies, many have
the wrong impression that they may privately download without limit.
Individual licensing is fairer: In contrast to private copying levies, only the actual user is charged,
not the manufacturer and other customers. Payments to the rightholder reflect the rights actually
granted for use and the actual extent of such use. With the current private copying levies every
device user is charged regardless of the actual use of a work.
Licensing is Internet compatible: In the digital environment, in particular on the Internet, DRM and
protection technology must have pre-eminence, because they allow payment based on actual
usage. Internet copying must be exempt from levies.
Individual licensing would abolish geographical differences: In hardly any other EU country are
equipment levies as widespread as in Germany – in the UK there are absolutely none, and in
Poland a percentage levy has been introduced, but it remains at under 5%. Among the adverse
consequences of the levy are a distortion of competition, the migration of companies, and job
losses. Where consumers can switch their custom to levy-free neighbouring countries (by
shopping on the Web, for example), levy collection fails.
The economic conditions support change in the system: the market for online content (which is
paid for individually) such as video on demand, music on demand, and online newspapers, is
growing at an extraordinary rate, and this will mean it leaves the current system of levies far
behind.
The levy situation in Europe
No
¡ levies in Ireland, UK, and Norway
¡ Levies only on media (and permanent storage) in France, Sweden, Lithuania, Denmark,
the Netherlands, and Switzerland
¡ Levies on media and reprography equipment in Portugal, Austria, and Hungary
¡ Levies on media and audio/video recording equipment in Finland, Estonia, Latvia,
and Italy
¡ Levies on everything in Spain, Germany, the Czech Republic, Slovakia, Greece, and Poland*
* except on printers and fax machines
Source: BITKOM
12
Dr. Alexander R. Klett, LL.M. (Iowa)
Attorney at Law,
Associate Partner of Gleiss Lutz, Munich
Collecting copyright fees by private copying levies the German legislature has not yet implemented
on equipment and recording media is no longer these provisions.
appropriate in a digital world. Effective protection
technologies and DRM are now available and make It is fairer to pay the rightholder for actual use of
such levies unnecessary. This has long been reco- copyright material and charge the user accordingly.
gnized in European law. As early as May 22, 2001, Then the compensation would reflect the legally
Directive 2001/29/EC on copyright in the information relevant actual use of the material, and the actual
society provided that national exceptions concerning extent of such use, instead of fictitious hypothetical
private copying permitted in copyright law should use as set by the legislature more than twenty years
not inhibit the use of technological measures or ago in a different technological context. It would also
their enforcement against circumvention. Indeed, it mean the user pays, not the manufacturer, importer,
goes a step further in providing that compensation or retailer of equipment and blank media. The royalty
to rightholders for permitted private copying should would reach the deserving party, the holder of the
take account of any application of technical measures rights in the actual copyright material used. It would
to the work in question. Thus, European law supports no longer be indiscriminately collected according to
the use of protection technology – which should red- device type and distributed (only) to registered mem-
uce the amount of compensation for the rightholder, bers of collecting societies using a formula.
and thus also the amounts collected. Unfortunately,
Music Downloads: From Record to Record
100 100
How Many? How Much?
0 0
0 0 60
48
40 40
36
33
20 26 20
20 15
0 8 0
2004 200 200 200* 2004 200 200 200*
Music downloads onto computers per Music downloads onto computers per
year in Germany: in million units year in Germany: Revenue in € millions
*Forecast Source: BITKOM
13
Proposition 5
Levies are only justified
in the analogue context
Private copying levies should only be collected on analogue media, where individual licensing
isn’t an option.
The German Federal Government’s draft law foresees an upper limit of 5 %, which is
advisable because it meets requirements of legal certainty and, for the manufacturers it
would provide for, proportionality between the compensation they pay and the economic
benefit they derive (a constitutional requirement). Competition and geographical
disadvantages for the manufacturers, importers, and retailers must be avoided.
The de minimis rule, by which equipment is subject to levy, only if it is used to make
substantial numbers of relevant copies, must remain to ensure not every device is caught
by the levy. German constitutional law demands limits to any such compromise of the
manufacturer’s rights.
The online copying should be exempt from levy because individual licensing would
be the best option.
Copyright is a protected title in the German consti-
tution, tied to a specific social duty. It is the task of the
legislature to create a reasonable balance between the
interests of the author on the one hand and society’s in-
terest in unimpeded access to information on the other
hand. Suitable compensation must be obtained for the
author for the use of works. Instead of charging the user,
the law collects a fixed levy from equipment manufac-
turers for authors as compensation for permission to
make private copies. This is justifiable to the extent that
it is difficult or impossible to collect details of the users
who benefit from such permission, but the fixed levy for
Prof. Dr. Christoph Degenhart copyright use is a relic of the analogue age. In the digital
Chair of Constitutional and Administrative Law, world there are also reasons in constitutional law why a
Director of the Institute of Media Law personal licensing system is preferable to device-related
at the University of Leipzig, fixed levies.
Member of the media board of Saxony
14
Levies and broadcast license fees are a burden
on private consumers
Levies and broadcast license fees
per workplace since 2007 (in €)
PC 30,42**
DVD burner 9,21
Blank DVD disk 0,17
All-in-one 76,70*
MP3 player 2,56*
Total 119,06
19 % VAT 22,62
Levies are also imposed on CD burners, copiers, and fax machines; Broadcast license fees 264,96***
the collecting societies want them for PCs and printers. For every
function of a piece of equipment the levies multiply in value. Total 406,64
* Demanded by the collecting societies
** Proposed by the German Patent and Trade Mark Office,
requested by the collecting societies Source: BITKOM
*** For four year`s PC use
1
Proposition 6
Inventions need patents, otherwise there would often
be no return on the cost of innovation
Patents are an incentive and reward for innovation and so encourage general progress.
They make it possible for the invention to be shared with others and at the same time protect
the value of the invention, for example via license agreements. This is particularly important,
because inventors and their companies may not always have the resources to market the
invention themselves.
Patents create a “pause for breath” in competition, in order to amortize the costs of invention.
Patents therefore represent significant assets that can serve as security for credit and thus open
doors to business development.
The demands on a patent system in a competitive environment are clear – it must offer the
greatest possible legal certainty. The competence of the relevant authorities and the courts is
important. Trivial inventions must not be granted patents. Obtaining a patent must not be
an expensive process.
Prof. Dr.-Ing. Karlheinz Brandenburg
Director of the Fraunhofer Institute for Digital Media
Technology IDMT in Ilmenau, Germany
Many people do not realize that patents were in- tions standardize technologies only if the (actual and
vented as a way of giving the public access to know- potential) patent holders agree to grant licenses on
ledge about new technologies. In the days before reasonable and nondiscriminatory (RAND) terms.
patents, new technology was kept secret to conserve Without the prospect of a patent there would be
the inventor’s competitive edge. The patent is a way no incentive to invest in costly research except for
of securing early publication of inventions. In return, bodies that are wholly financed from the public purse
the inventor is allowed a monopoly on exploitation of and for major corporations that can market their
the invention for a certain time. From the outset it is proprietary technology themselves. Many compa-
thus a limited monopoly. nies can however afford to invest in new ideas with
In today’s standardization environment, the mo- patents and under RAND terms. That means everyone
nopoly is even more limited. The International Orga- has access to inventions and can transform ideas into
nization for Standardization (ISO) and other organiza- products.
1
Dr. Walther Otremba
State Secretary at the German Federal Ministry
of Economics and Technology, Berlin
Effective protection for intellectual property is
crucial to nurturing the innovative drive of our society
as we compete globally. Works of the intellect contri- them file patents and utility models. These numbers
bute substantial value in our society. The monopoly must grow if the small and midsize segment is to rea-
rights afforded by industrial property rules provide lize its full potential for innovation. Supporting small
protection for business investment in research and businesses and midsize companies more effectively in
technology. Major companies make full use of that their management of intellectual property is therefore
protection. Many small businesses and midsize compa- a cornerstone of our technology policy.
nies have some catching up to do: only one-third of
Interaction: from the idea through development to value
IDEA
Patent
Product
license
revenues
revenues
Product
research and
develop-
Products ment Patent
1
Proposition 7
We must continue to develop
the European patent system
Patent quality: Awarded patents should be as secure as possible. The examination should be
stringent concerning the patentability criteria.
Patent disputes and legal certainty: Certainty is crucial to maintaining patents. The European
Commission and European Parliament’s European Patent Litigation Agreement should be concluded
to ensure a consistent interpretation of the law is available at last instance.
Patent costs: The high costs of Europe-wide patent protection are a disadvantage for European
business, which small and midsize companies feel most. The cost of patent applications and disputes
should be kept as low as possible. Ratification of the London Protocol, and the associated easing of
language expenses, would be an important contribution.
Community patent: A Community patent based on the general political arrangement made in
May 2003 should not be introduced, as in comparison with the present situation it offers no specific
cost or procedural advantages.
Prof. Alain Pompidou Why is it so critical to lower the cost for the patent
President of the European Patent Office, Munich application procedure and to create a harmonisation
of this point throughout Europe? Or contains this
risk for a decreasing quality of applications?
The initiative to lower the costs of patenting is
not aimed at the application and grant processes
but at the translations that have to be provided by
the patentee post-grant. As you may know, European
patent applications are examined on the basis of
a centralised procedure in one of the three official
languages of the EPO – English, French or German. Up
to the moment of grant the procedure is very cost-ef-
ficient and accounts on average for about 14% of the
total costs of a patent. However, matters get expen-
sive for the patentee once the EPO has done its job
and the granted patent needs to be validated at the
several national patent offices. In each state where
the patent should take effect the patentee needs to
file a translation in the respective official language.
Depending on the size of the patent and number of
designated countries these costs can add up to nearly
40% of the total!
Under the proposed London Agreement, these
translation requirements would be reduced to a
1
minimum. Only the patent claims would need to be Applications of ITC-patents at the European Patent Office,
translated into the national official languages, whe- by country of origin
reas the body text of the patent would need to be in
11759
11561
11529
11277
11296
one of the three official languages of the EPO. The 10 000
10136
states that don‘t have an EPO language as their own
9388
9157
8908
8724
official language would have to designate one. The 8 000
8442
7969
translation costs could be reduced by up to 40% per
6991
6739
6 000
application, which would result in significant savings
5635
5450
for European businesses and industry in the order of
5321
5204
4913
4 000
4408
more than 100 million Euros per year!
3859
Moreover, the whole cost-saving process does not 2 000
affect the quality of patents, as it is not linked to the
drafting of the application and the grant procedure. It 0
1997 1998 1999 2000 2001 2002 2003
is designed to simplify life for the patent owner once ¡ Germany ¡ USA ¡ Japan Source: OECD, Main Science and Technology Indicators, 2006/2
they have gone through the patenting process.
The London Agreement can enter into force once of the applicant on his chances of obtaining a patent
eight states, including France, Germany and the UK, for his invention. Two years ago the EPO successfully
have ratified it. Today, eleven states already have introduced the so-called Extended European Search
approved the agreement, but we are still waiting for Report. This means that today our applicants receive
France to undertake that step. together with their search report a first non-binding
opinion of the patent examiner on the patentability
For a pan-European reform of the patent system of their invention. This prompts facilitates the deci-
the guarantee of a continuing high quality level of sion whether or not to carry on with the procedure.
applications and admittance procedure is key. What Moreover, we also check at a very early stage whether
possibilities are there to avoid patent applications an application filed with the EPO concerns non-
for inventions that are based on other patents but patentable subject matter, such as ideas, business
are modified only by minimal changes? methods and the like. If we find this to be the case we
Quality is clearly one of the decisive issues for the notify the applicant accordingly and encourage him
well-functioning of our patent system. On the one to withdraw the application.
hand, poorly drafted patent applications, or appli- The third measure lies in the rigour of the proce-
cations with non-patentable content, are clogging dure. Our annual grant rate is just over 50%, mea-
the system and unnecessarily slowing down the ning that a large number of applications are either
patenting process in general, as dealing with them rejected by the Office or withdrawn by the applicant
binds important resources. The national patent of- following unfavourable examination reports.
fices and the EPO are very aware of this situation and It is a fact: Fuzzy patents pose a risk to the innova-
have agreed on a number of steps within the so-cal- tion and technology market in that they prolong the
led European Patent Network to tackle this issue with period of legal uncertainty through litigation. It is our
appropriate strategies. That network will be based on task to avoid such unnecessary risks.
a European quality standard and also addresses the
workload challenge.
On the other hand, we have to increase informa-
tion to the applicants and control mechanisms in
the procedure to safeguard the quality of patents. A
significant step in that direction is early information
1
Proposition 8
We must find more effective measures
to limit product piracy
Product piracy continues to grow fast and represents a danger for Germany as a location for
business. Considerable problems with the application of some regulations show that there
is a need for action on this.
Weak points in the law and its implementation must be identified before appropriate steps
can be taken.
Industry, politicians, and law enforcers must work together to fight piracy effectively.
Karl-Heinz Matthias
President of the German Customs Investigation
Bureau, Cologne
„Trademark piracy or product piracy has become
a bigger issue in recent years.“
From the perspective of the customs service, com-
bating piracy works best with the close and trusting
cooperation of the rightholders. Applications to the
The figures from the German customs service customs’ Central Office for the Protection of Intellec-
speak for themselves: tual Property in Munich for border seizures increased
steadily from 68 in 1995 to 352 in 2005. This is a sign
The customs service had an infringement that rightholders are increasingly aware of the issues
caseload of just 344 in 2002, but this had and that together, business and the authorities are
grown to 628 in 2006. on the right track.
The total number of customs seizures We have had some spectacular successes in the
rose more than 1400% from 506 in 1995 recent past, but all parties concerned need to do
to 7217 in 2005. more. The evidence indicates that this is an area of
crime in which international operators are incre-
asingly involved – and the Customs Investigation
Bureau must prioritize combating them.
20
EU 2005 Software piracy rate
The number of units of pirated software in use in 2006 divided by the
total units of software installed.
FINLAND
NORWAY 20-29 %
SCOTLAND
NIR SWEDEN 30-39%
ESTONIA
DK
IRL LITHUANIA 40-49%
ENGLAND NL LATVIA 50-59%
BELGIUM POLAND
GERMANY 60-75%
CZECH REPUBLIC
FRANCE
SLOVAKIA
SW AUST
PORTUGAL HUNGARY
SPAIN ITALY
GREECE
Source: Business Software Alliance, Third Annual BSA and IDC Global Software Piracy Study, May 2006
More than ever before, customs investigators are profiles to training customs officers to collaborative
working with other German and international agen- operations.
cies to ratchet up the risk factor for the offenders.
This cooperation includes not only the continuous
circulation of information via the Customs Investiga- The German Federal Ministry of Finance publis-
tion Bureau, the hub of customs investigation efforts, hes an annual report (Gewerblicher Rechtsschutz)
but also targeted operations based on collaboratively at www.zoll.de on the protection of intellectual
produced risk profiles. I am sure our operational ideas property, which gives more detail on what the
will be of interest to companies that have suffered customs service is doing to combat piracy. If you
the impact of counterfeiting. I therefore take this op- have questions concerning combating the infrin-
portunity to invite all interested trademark proprie- gement of intellectual property in the context of
tors to work closely with the customs service and the the import, export, or transit of goods, please
customs’ Central Office for the Protection of Intellec- contact your local customs investigation office
tual Property in Munich. (http://www.zoll.de/english_version/index.html)
Such cooperation can range from individual tele- or the Customs Investigation Bureau.
phone inquiries to working together on creating risk
21
Proposition 9
The balanced responsibility regulations in the
E-Commerce Directive must not be overextended,
much less disregarded in practice
The Internet is provided by multiple parties assuming different responsibilities (for access,
platforms, and content), and the responsibilities need to be clearly defined for those involved.
The E-Commerce Directive provides a balanced legal framework in this area.
Its implementation, however, varies at the national level. German courts interpret responsibility
very broadly in some cases. This leads to overly extensive supervisory obligations that can
no longer be met in practice.
Legislators are responsible for correcting such deviations and bringing the law’s real-world
implementation back into line with the directive.
Because of the enormous daily traffic, monitoring the legality of external content is impossible
for purely practical reasons. For this reason, constant monitoring of external content should not
be made mandatory.
Providers are also caught between litigant parties in actions for injunctive relief. They typically
lack the information needed to fully evaluate the legal position. Implementing a notice and
take-down procedure enabling providers to remove content based on certain formal
criteria without being drawn into disputes between rightholders and infringers would make
sense in such cases.
How the notice and take-down process works, in six steps
Notice 6b. Rightholder refrains from taking legal action in the
specified timeframe and host provider can therefore
1. Rightholder serves notice on host provider: safely allow access to the content again.
Requests removal/blocking and/or disclosure of
information. 6a. Rightholder brings court action against content
(formal notice from rightholder to host provider confirming provider and informs host provider of the timeframe.
legal infringement) Content remains blocked.
2. Host provider removes/blocks content XY and/or 5. Host provider informs rightholder about content
discloses information.
provider’s protest and the timeframe for issuing of
(no duty on host provider to check the content)
further legal orders
Blocking/deletion of content XY!
4. Content provider protests removal of XY.
3. Host provider informs content provider about
the measures and the identity of rightholder. Opposition process
One possibility for freeing the service provider from the role of ■ The host provider enjoys a privileged position with respect
judge they play in the current accountability process would be the of liability toward the rightholder (with regard to the now
notice and take-down system, which BITKOM has been removed content) and toward the content provider (with regard
suggesting for a long while. to the removal of the content).
■ The process is simple: The rightholder discovers content which ■ Such a legal solution already exists for copyright in,
infringes his rights and sends the host provider a notice for example, the United States, Finland, and Iceland.
describing, among other things, the rights involved and how
they are being infringed.
22
Prof. Dr. Gerald Spindler*
Professor of Civil Law, Commercial and Economic Law,
Comparative Law, and Multimedia and Tele-
communication Law at the Georg August University
of Göttingen, Germany
The law on responsibility has proved valuable general liability and responsibility law. Without such
for the most part, but problems still exist fitting it information, rightholders cannot assert their rights
in with the more conventional provisions of the law. against those who infringe them. Notice-and-take-
This often results in attempts to limit responsibility down-procedures also depend essentially on whether
regulations and extend liability. The right balance the provider has the right to disclose information on
must be found between protecting rightholders and infringers. On the other hand, the demands of data
efficiently pursuing their claims on the one hand and, protection must be considered; a provider cannot
on the other, promoting new technologies and the divulge an alleged infringer’s personal information
innovative potential of electronic communication at the rightholder‘s request alone. In any case, heavy
networks. reliance on criminal proceedings (and subsequent
In this regard, the difficulties rightholders have in access to inquiry files) is not a sensible option. We
both tracking down and penalizing those infringing should much rather consider legislation empowering
their rights and monitoring automated content providers to release relevant data in John Doe procee-
must be taken into account. Provisions on liability dings involving valid patents. For this, however, the
and responsibility should provide more powerful European data protection regulations must also be
incentives for the affected parties to improve how modified.
they monitor illegal content. Otherwise, regulations
that are conditional on actual awareness alone can
even harm service providers who in fact strive to
collaborate with rightholders; only those with their
figurative heads in the sand benefit. Notice-and-take-
down-procedures present a possible solution. That
said, they must also contain incentives for further de-
velopment of monitoring practices. Moving forward,
the law must also address hyperlinks, search engines,
and newer forms of communication. The task of the
pending review of the E-Commerce Directive will be
* The author was commissioned to produce a comparative law report
to submit sustainable proposals. Information disclo- on the implementation of the E-Commerce Directive and possible
sure claims against providers are closely related to consequences. The views expressed here are all his personal views.
23
Proposition 10
The right to information in Internet
cases must pay equal consideration to the
interests of rightholders and providers
Intellectual property infringement, particularly on the Internet, causes great damage and
presents a danger to Germany as a business location. On the Internet, however, infringers can
typically only be tracked with the help of Internet service providers. Rightholders’ access to
information is thus an important part of law enforcement.
Prompt implementation of the Enforcement Directive (Directive 2004/48/EC of the European
Parliament and of the Council of April 29, 2004 on the Enforcement of Intellectual Property Rights)
would be a welcome step in legislating for a duty of disclosure. However, this duty must be
appropriately defined. Providers are caught between the litigant parties and must thus not be
burdened with costs and legal uncertainty.
Providers also want their services to be used for legal purposes. Providers themselves, however,
have no way of verifying entitlement in claims for information. If they consent to unwarranted
demands for information, they run the risk of being sued for damages by the users whose data
they have illegally passed on. The process of information disclosure must thus be defined using
purely formal criteria that providers can follow to free themselves of liability.
The cost of providing the information should be borne by the infringer if found liable on the
infringement issue. As in every case of law enforcement, the rightholder must initially finance
this cost.
According to the costs-by-cause principle, the costs of inquiries should be borne by the infringer.
As in every legal proceeding, the rights owner has to prefinance these costs.
When a rightholder wants to deal with typically
anonymous online offenders, claiming the right to
information from Internet providers is the criti-
cal hurdle. The rightholder understandably wants
access to the provider’s data; after all, the provider’s
customer has (allegedly!) infringed the rightholder’s
Sebastian von Bomhard rights. To accommodate the rightholder, however,
Founder and Executive Board member of the provider faces a legal minefield: Whether and
SpaceNet AG, Chairperson of the Supervisory Board to whom it can release data that is in part highly
of DENIC e.G. sensitive is currently a hotly contested issue. Appel-
24
late court judgments and decisions handed down For instance: Should a provider be required to make
by public authorities contradict each other in this rapid decisions in individual cases as to whether a
area. This unacceptable situation culminated in the quote is protected under the freedom to cite sour-
following actual case: In 2004, a district court found ces? Whether a statement of criticism is defamato-
against an Internet service provider for withholding ry? Whether a known trademark is being used in a
information, surprisingly citing the analogy of the way that unfairly diminishes its value? This would
German Copyright Act, section 101a, while at the force every provider to employ a growing legion of
same time the data protection authorities threa- lawyers to examine cases of possible infringement
tened the provider with regulatory offence procee- – under time constraints, no less. Due to the limited
dings should it pass on any information. This means opportunities to examine the circumstances and
that providers may as well flip a coin to decide complicated points of law at hand (particularly in
whether they are required and allowed to divulge copyright and trademark law), providers can only
information, since not even an attorney can tell make uncertain and risky decisions. Generally spea-
them for sure. The implementation of the Enforce- king, it is important that providers are not required
ment Directive will create a duty of disclosure, but to act as judges with regard to external content.
providers will continue to face the difficult question When information is requested, the sensitivity and
of whether the user has committed any infringe- perceptibility of the data must be taken into ac-
ment warranting the disclosure of information. We count. For example, Internet service providers often
see a fundamental problem in many German court deal with highly sensitive data (subject to telecom-
decisions concerning provider liability: The monito- munications secrecy requirements); in such cases, a
ring tasks required of providers force them to act as court order should be required before any informati-
judges – a role they cannot possibly fulfill properly. on is disclosed.
Claims for information disclosure from rightholders with regard to Internet providers
and the user’s data privacy interests.
1. Permission to save data: 2. Infringement of the user’s rights:
Provider must be able to recognize which data about Often not clear at the time of the breach. As a non-
user it is allowed to save (and for what reasons). participant, provider is often not in a position to judge.
3. Claims for disclosure:
Rightholder considers legal claim against provider.
Provider must be able to recognize whether it is required
to disclose data, and which data.
4. Authorization to disclose data:
If user has not given permission, provider must have
statutory backing for disclosure.
2
Glossary
Collecting societies of national patents. Questions of infringement
In Germany, collecting societies are entities that and annulment are therefore subject to local juris-
act in a fiduciary capacity for a large number of diction.
authors and other rightholders to exploit their
rights for their shared benefit. The best known are Intellectual property
Gesellschaft für musikalische Aufführungs- und Intellectual property is an umbrella term for certain
mechanische Vervielfältigungsrechte (GEMA), which intangible protected assets such as patents, copy-
is a leading musical performance rights society, and right and authorship rights, trademarks, registered
Verwertungsgesellschaft Wort (VG Wort), which industrial designs, trade secrets, the law in Germany
(among other things) collects royalties for perfor- relating to the use of personal names, etc.
mances of literary works.
License fee
Computer-implemented invention A fee paid by a licensee to a licensor in considera-
A computer-implemented invention is an invention tion of a license to use the licensor’s intellectual
whose implementation involves the use of a com- property. A license fee may be fixed or it may re-
puter, computer network, or other programmable present a percentage of the revenue from the end
apparatus, the invention having one or more fea- product.
tures that are realized wholly or partly by means of
a computer program. In Europe, it is patentable only License swap
if it is new and nonobvious and achieves a technical Sometimes companies have to buy licenses in
effect. Computer programs as such are not paten- their competitors’ intellectual property in order to
table in Europe. continue their business. Their own patents may
represent valuable currency, so the companies
Copyright cross-license their patents, with or without some
German “copyright” is a right of authorship protec- relatively minor payment, in what is known as a
ting an individual intellectual or artistic creation in license swap.
the form expressed by the author or other origina-
tor. It covers traditional categories of works such as Mark
literature and music as well as multimedia works A mark (trademark, service mark) is a legally
and other new categories. It protects only the form pro tected sign identifying a maker’s, seller’s, or
of expression, not the idea or function of the work. provider’s goods or services. The mark may, for
It arises automatically when the author creates example, be a word or phrase, a symbol or image,
the work and ends 70 years after the death of the or a sound. Unless they are especially familiar, to
author. be protected in Germany, marks are registered with
the German Patent and Trade Mark Office. Regis-
DRM tration provides protection for as long as the mark
Digital rights management; technology to control remains in use.
the distribution of digitalized content. Essentially,
DRM provides rightholders with new modes of Novelty
charging fees for license rights in, and means to Novelty is a requirement for patentability. Anything
control the use of, material in digital form, such as that was already available, in writing or otherwise,
video and audio recordings, software, electronic when the patent application is filed, does not count
documents, and electronic books. as new, or “novel.”
European patent Open source software (OSS)
A European patent is a patent granted by the Eu- Open source software differs from proprietary
ropean Patent Office (EPO) under the terms of the software in the terms under which it is licensed for
European Patent Convention (EPC). The EPO has a use as copyright work. Anyone can freely use open
harmonized procedure for granting European source software; the source code is freely available
pa-tents that apply in the EPC contracting states. and may be altered. However, amendments and ad-
Anyone can give opposition notice to the EPO wi- ditions should also be made generally available. In
thin nine months from the publication of the men- patent law (issues such as patentability, the protec-
tion of grant, and successful opposition can lead to tion afforded by patents, and infringement) there is
amendment or revocation of the patent. A Europe- no distinction from proprietary software. In contrast,
an patent corresponds and is equivalent to a bundle freeware and shareware can be used in any way.
2
Patent Piracy
Patents are granted by an official patent office upon Piracy is infringing another’s trademark, patent, co-
registration. A patent protects a new invention and pyright, rights of authorship or similar intellectual
its functions and underlying principle. property right to imitate or counterfeit the other’s
product.
Patent application
A patent application or filing is an official applica- Private copy
tion for registration of a patent for an invention. In German law, making a legitimate copy of a copy-
The application must disclose the invention in full right work by the possessor of that legitimate copy
detail. A patent is granted if, after a full examina- for personal use and use by his or her friends is a
tion, the patent office finds the invention patenta- permitted fair use if it is not for gain or public use.
ble.
Private copying levy
Patent examination Private copying levies are payable to collecting soci-
The patent office examines the invention to deter- eties by manufacturers of devices such as scanners,
mine whether (in European patent law terms) it photocopiers, CD burners that can be used to make
is sufficiently novel, inventive, and capable of indus- private copies, and of blank media (such as CDs and
trial application. DVDs), toward compensation in lieu of license fees
for rightholders.
Patent grant
A formal act of state giving a patent as a protected Registered industrial design
monopoly. The process leading up to grant can take Registered industrial designs protect the form, as
years. After a patent grant has been published by distinct from the function, of products. The term is
the German Patent and Trade Mark Office, other 25 years.
persons have three months in which to oppose the
patent. Utility model
A utility model is an alternate German intellectual
Patent protection property right for inventions. It is available only
The grant of a patent by the patent office gives the for new inventions, but the requirements are less
patent owner exclusive rights in the invention for stringent than for patents. It has an initial term of
the term of the patent. That means the owner can three years, extensible to not more than 10 years.
prevent others from using the patented invention Applications are filed with the German Patent and
for gain. The owner can use the invention so far as Trade Mark Office. Utility models are registered if
such use does not infringe any rights of others. If the formalities are correct, without examination of
there is an infringement, German law gives the pa- the invention as such.
tent owner remedies for damages and illegitimate
use for profit, and for information and destruction
of infringing matter. The term is 20 years, subject to
payment of annual renewal fees.
2
The German Association for Information Technology,
Telecommunications and New Media (BITKOM)
represents more than 1,000 businesses, 800 of which
are members with total annual revenues of about
€ 120 billion and 700,000 employees. They include
equipment manufacturers, software vendors, and
providers of IT and telecommunications services
and content. BITKOM aims to optimize the political
and economical framework for the ICT industry. It
campaigns for modernization in education and for
economic policy that supports innovation.
German Association for Information, Technology,
Telecommunications and New Media e.V.
Albrechtstraße 10
10117 Berlin
Telephone +49. 30. 27576-0
Fax +49. 30. 27576-409
bitkom@bitkom.org
www.bitkom.org
2